Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA341635
`ESTTA Tracking number:
`04/09/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91190284
`Plaintiff
`Graceway Pharmaceuticals, LLC
`Andrea J. Mealey
`Edwards Angell Palmer & Dodge LLP
`F.D.R. Station, P.O. Box 130
`New York, NY 10150
`UNITED STATES
`trademark@eapdlaw.com, amealey@eapdlaw.com
`Motion for Summary Judgment
`Andrea J. Mealey
`trademark@eapdlaw.com, amealey@eapdlaw.com
`/Andrea J Mealey/
`04/09/2010
`Summary Judgment Motion and Memo.pdf ( 14 pages )(677282 bytes )
`Exhibit A.pdf ( 3 pages )(71116 bytes )
`Exhibit B.pdf ( 4 pages )(131758 bytes )
`Exhibit C.pdf ( 4 pages )(109726 bytes )
`Exhibit D.pdf ( 21 pages )(862016 bytes )
`Exhibit E.pdf ( 10 pages )(338031 bytes )
`Exhibit F.pdf ( 3 pages )(128534 bytes )
`Exhibit G.pdf ( 3 pages )(131932 bytes )
`Exhibit H.pdf ( 7 pages )(427778 bytes )
`Exhibit I.pdf ( 38 pages )(1465057 bytes )
`Exhibit J.pdf ( 15 pages )(751604 bytes )
`
`

`
`I hereby c_ertify that this correspondence is being deposited electronically with the
`Trade -ark Trial and pp -. al Board on the date shown below.
`
`
`
`Date: April 9, 2010
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF APPLICATION SERIAL NO. 77/653,491
`MARK: ALNARA
`
`GRACBWAY PHARMACEUTICALS, LLC,
`OPPOSER
`
`APPLICANT
`
`V.
`
`OPPOSITION NO. 91190284
`
`ALNARA PHARMACEUTICALS, INC.,
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`Opposer GRACBWAY PHARMACEUTICALS LLC, a Delaware limited liability
`
`company (“Opposer”), by and through its undersigned attorney, hereby moves for summary
`
`judgment pursuant to Rule 56, Fed. R. Civ. P., and Trademark Rule 2.127(6), sustaining this
`
`opposition against US. Trademark Application Serial No. 77/653,491 filed by Applicant
`
`ALNARA PHARMACEUTICALS, INC, a Delaware corporation (“Applicant”) for the mark
`
`“ALNARA.”
`
`As set forth in the attached memorandum and exhibits,
`
`this Motion is made on the
`
`grounds that: (i) Opposer has priority of use; and (ii) Applicant’s mark is confusingly similar to
`
`Opposer’s “ALDARA” mark and will be used in connection with closely related goods, to be
`
`BOS2 786796.}
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`

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`offered in the same channels of trade to the same consumers and there thus exists a likelihood of
`
`confusion precluding registration of Applicant’s mark under Section 2(d) of the Lanham Act.
`
`Accordingly, Opposer requests that it be awarded summary judgment sustaining its opposition
`
`against Application Serial No. 77l653,49l as a trial on the matter would entail unnecessary fees
`
`and Waste the Board’s scarce resources.
`
`Dated: April 9, 2010
`
`GRACEWAY
`
`PHARh§1§CEUTICAL, LLC,
`BY IT ATTORNEY
`
`_7
`
`‘
`* ea J. Meale
`ameale)/@§:ap :1 aw.com
`Edwards Angeli Palmer & Dodge, LLP
`P.O. Box 130, F.D.R. Station
`New York, New York 10150
`Telephone: (617) 239-0388
`Facsimile: (617) 227-4420
`
`BOS2 7867961
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF APPLICATION SERIAL NO. 77/653,491
`MARK: ALNARA
`
`GRACEWAY PHARMACEUTICALS, LLC,
`OPPOSER
`
`APPLICANT ’
`
`V.
`
`OPPOSITTON NO. 91190284
`
`ALNARA PHARMACEUTICALS, INC.,
`
`MEMORANDUM IN SUPPORT OF OPPOSER’S
`
`MOTION FOR SUMMARY JUDGMENT
`
`I.
`
`INTRODUCTION
`
`Opposer GRACEWAY PHARMACEUTICALS LLC, a Delaware limited liability
`
`company (“Opposer”), respectfuily submits this memorandum in support of its Motion For
`
`Summary Judgment (the “Motion”). Pursuant to Rule 56, Fed. R. Civ. P., Opposer seeks
`
`summary adjudication that, based on the facts presented herein as to which there are no genuine
`
`issues of material fact to be tried, and as a matter of law, this opposition against Application
`
`Serial No. 77/653,491 (the “Application”) filed on 2009, by Applicant ALNARA
`
`PHARMACEUTICALS, INC., a Delaware corporation (“Applicant”) for registration of the mark
`
`“ALNARA” for “pharmaceutical preparations for the treatment of metabolic, endocrine,
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`gastrointestinal, digestive, rheumatologic, urological, nephrology, inflammatory, pediatric,
`
`nutritional, immunologic, cardiovascular, dermatologic, hematologic, infectious, circulatory,
`
`pulmonary, oncologic, muscular and respiratory diseases and disorders,” must be sustained.
`
`BOS2 786796.}
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`

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`II.
`
`PROCEDURAL AND FACTUAL BACKGROUND
`
`Opposer acquired the trademark registration and the good will associated therewith for
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`the mark ALDARA (the “ALDARA Mark”) from Opposer’s predecessor in interest, 3M
`
`Company (“3M”), in December 2006 pursuant to an asset purchase agreement. E Declaration
`
`of John A. A. Bellamy, attached hereto as Exhibit “A” (“Bellamy Dec.”) at 1] 2. 3M’s
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`predecessor in interest, Riker Laboratories, Inc., had filed an application to register the
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`ALDARA Mark on September 14, 1994 and commenced use of the ALDARA Mark in
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`commerce in October 1996. ' Q at ‘H 4. The application for the ALDARA mark proceeded to
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`registration on April 15, 1997. Thereafter Opposer and its predecessors have consistently
`
`advertised, sold, and provided pharmaceutical products under the mark “ALDARA” (the
`
`“ALDARA Mark”) in the United States. E. at 1} 5 and see Exhibit “B”, the TARR print out for
`
`the ABDARA registration. Since at least as early as October 30, 1996, Opposer, through its
`
`predecessors-i11-interest, has had extensive, exclusive, and continued use of the ALDARA Mark
`
`in connection with, “pharmaceutical preparations, namely irnmunomoduiators” (“Opposer’s
`
`Goods”). E Bellamy Dec. at 11 3.
`
`On or about January 21, 2009, Applicant filed the subject Application Serial No.
`
`77/653,491 (“ALNARA Application”) for the mark “ALNARA” (“ALNARA Mark” , in
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`connection with “pharmaceutical preparations for the treatment of metabolic, endocrine,
`
`gastrointestinal, digestive, rheurnatologic, urological, nephrology, inflammatory, pediatric,
`
`nutritional, immunologic, cardiovascular, dermatologic, hematologic, infectious, circulatory,
`
`pulmonary, oncologic, muscular and respiratory diseases and disorders,” in International Class 5
`
`(“App1icant’s Goods”).
`
`_S,,e,_e Exhibit “C” containing a TARR print out for the ALNARA
`
`Application attached hereto. The ALNARA Application was filed on an intent—to-use basis. Li.
`
`BOS2 786?96.l
`
`

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`The Applicant did not amend its application to allege use prior to the publication of the
`
`application for opposition. According to the Applicant, its first use of the ALNARA Mark on or
`
`in connection with its goods in the United States began in April 2009. E Applicant’s
`
`Responses to Inteirogatory No. 7 attached hereto as Exhibit “D”. Specifically, the Applicant
`
`responds to Interrogatory No. 7 as follows:
`
`Interrogatory No. 7:
`
`Describe in detail the circumstances under which mark ALNARA was first used on or in
`
`connection with any goods or services in commerce in the United States, identifying the
`Products and/or Services, including the time, date, place, and location of such first use.
`
`Answer:
`
`ALNARA was first used on or in connection with clinical trials involving an oral,
`porcine-free enzyme replacement therapy in April 2009.
`
`The 30-day testimony period for Opposer has not opened, as it is scheduled to close on
`
`May 25, 2010, pursuant to the Notice of Filing of Opposition distributed by the Board on May
`
`19, 2009, and as extended by consent motion of the parties, which motion was allowed on
`
`January 25, 2010. Applicant contends that
`
`the marks ALDARA and ALNARA are not
`
`confusingly similar. §_e_e Applicant’s responses to Request for Admission Nos. 1 and 2 attached
`
`hereto as Exhibit “B”. As is shown below, however, it is beyond dispute that the marks at issue
`
`are virtually identical. Further, the Opposer’s Goods and Applicant’s Goods are related and will
`
`be offered in the same channels of trade to the same consumers as set forth in detail below.
`
`Thus, there is no material issue of fact left for trial, and this Opposition should be sustained as a
`
`likelihood of confusion exists under Section 2(d) of the Lanharn Act, 15 U.S.C. § 1052(d).
`
`III.
`
`ARGUMENT
`
`A.
`
`The Applicable Standard For Summary Judgment.
`
`BOS2 ’I86'I96.l
`
`

`
`Summary judgment is an appropriate method for disposing of cases in which there are no
`
`genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law.
`
`E Fed. R. Civ. P. 56(0). The purpose of summary judgment is to avoid an unnecessary trial
`
`where additional evidence would not reasonably be expected to change the outcome. E Pure
`
`Gold, fizc. v. Syntax (U.S./1.), Inc., 739 F.2d 624, 222 U.S.P.Q. 741 (Fed. Cir. 1984). “While the
`
`initial burden on a motion for summary judgment is on the movant, if the movant’s position is
`
`supported by affidavits and/or other evidence, the respondent must come forward with specific
`
`materials of its own to show that there are triable issues of fact. . ..” National Football League v.
`
`Jasper Alliance Corp, 16 U.S.P.Q.2d 1212, 1215 (T.T.A.B. 1990) (granting summary judgment
`
`to opposer in an opposition proceeding on likelihood of confusion grounds). The non-moving
`
`party may not rest on mere denials or conclusory assertions, but rather must proffer countering
`
`evidence, by affidavit or as otherwise provided in Fed. R. Civ. P. 56, showing that there is a
`
`genuine factual dispute for trial.
`
`_S_§;p TBNIP § 528.01 at 500-341 (2d ed. Rev. 3/ 12104). Based
`
`on the facts set forth herein and the law set forth below, the Board should grant summary
`
`judgment in Opposer’s favor on the ground of likelihood of confusion.
`
`B.
`
`Opposer Has Standing To Oppose Alnara Pharmaceutical’s Application
`
`“Standing is a threshold inquiry directed solely to establishing a plaintiff’ s interest in the
`
`proceeding. The purpose in requiring standing is to prevent litigation where there is no real
`
`controversy between the parties, i.e. where a plaintiff is no more than a mere interrneddler.”
`
`Hcujo v. Pro Football Inc., 30 U.S.P.Q. 2d 1828, 1830 (T.T.A.B. 1994).
`
`The continuing pronouncements of the Federal Circuit leave us with the understanding
`that there is a low threshold for a plaintiff to go from being a mere interrneddler to one
`with an interest in the proceeding. The Court has stated that an opposer need only show
`“a personal interest in the outcome of the case beyond that of the general public.”
`[Citations omitted.] Once this threshold has been crossed, the opposer may rely on any
`ground that negates applicant’s right to the registration sought.
`
`BOSZ 786796.l
`
`- 5 _
`
`

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`Estate ofBiro v. Bic Corp, 18 U.S.P.Q. 2d 1382 (T.T.A.B. 1991).
`
`Opposer has standing to oppose Petitioner’s ALNARA Application because, as the senior
`
`user of a mark that will be infringed by Petitioner’s use or its ALNARA Mark, the Opposer is
`
`being damaged and will likely continue to be damaged by Petitioner’s ALNARA Mark. Opposer
`
`has been advertising, selling, and providing immunomodulators under it’s the ALDARA Mark
`
`since at least as early as October, 30 1996. E al_so Bellamy Dee. at 1] 2, and Exhibit “B”
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`attached hereto. Applicant has begun use of the ALNARA Mark in connection with
`
`pharmaceuticals that will be sold in the same channels of trade, and consumer confusion is
`
`imminent. See Applicant’s responses to Request for Admission Nos. 7 and 11 attached hereto as
`
`Exhibit “B”.
`
`C.
`
`Likelihood of Confusion
`
`An application to register a trademark must be denied if the mark sought will cause with
`
`a registered mark. Lanham Act §2(d), l5 U.S.C. §1052(d). This opposition should be sustained
`
`under Section 2(d) of the Lanham Act because Applicant seeks registration of a mark that so
`
`resembles Opposer’s ALDARA Mark, that it is likely to cause confusion among consumers
`
`looking to purchase pharmaceuticals. E Safety-Kleen Corp. v. Dresser Indus, Inc., 518 F.2d
`
`1399, 1404, 186 U.S.P.Q. 476, 480 (C.C.P.A. 1975). An analysis of the likelihood of confusion
`
`factors enunciated in In Re E.I. DuPont de Nemours & C0,, 476 F.2d 1357, 177 U.S.P.Q. 563
`
`(C.C.P.A. 1973), weighs heavily in favor of a finding that registration of Applicant’s Mark
`
`presents a likelihood of confusion.
`
`“In testing for likelihood of confusion under Sec. 2(d), therefore, the following, when of
`record, must he considered:
`
`(1)
`
`The similarity or dissimilarity of the marks in their entireties as to appearance,
`sound, connotation and commercial impression.
`
`33032 135795.:
`
`_ 7 _
`
`

`
`(2)
`
`(3)
`(4)
`
`(5)
`(6)
`(7)
`(8)
`
`(9)
`
`(10)
`
`The similarity or dissimilarity and nature of the goods or services as described in
`an application or registration or in connection with which a prior mark is in use.
`The similarity or dissimilarity of established, likely-to-continue trade channels.
`The conditions under which and buyers to whom sales are made, i.e. “impulse”
`vs. careful, sophisticated purchasing.
`The fame of the prior mark (sales, advertising, length of use).
`The number and nature of similar marks in use on similar goods.
`The nature and extent of any actual confusion.
`The iength of time during and conditions under which there has been concurrent
`use without evidence of actual confusion.
`
`The variety of goods on which a mark is or is not used (house mark, “family”
`mark, product mark).
`The market interface between applicant and the owner of a prior mark:
`(a)
`a mere “consent” to register or use.
`(b)
`agreement provisions designed to preclude confusion, i.e. limitations on
`continued use of the marks by each party.
`assignment of mark, application, registration and good will of the related
`business.
`
`(c)
`
`(d)
`
`laches and estoppel attributable to owner of prior mark and indicative of
`lack of confusion.
`
`(11)
`
`(12)
`(13)
`
`The extent to which applicant has a right to exclude others from use of its mark on
`its goods.
`The extent ofpotential confusion, i.e., whether de nzirzimis or substantial.
`Any other established fact probative of the effect of use. Where the Patent Office
`follows such process, it is not abandoning its duty under Sec. 2(d) or allowing
`individuals to take the law into their own hands. Consideration of evidence
`
`emanating from the only place where confusion can occur, i.e. the marketplace, is
`not related to who decides but to the process of deciding.”
`
`DuPont‘, 476 F.2d at 1361.
`
`In this case, where pharmaceutical products are at issue, a more conservative approach in
`
`determining a likelihood of confusion should be applied because of the harmful consequences of
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`an incorrect medicine being recommended and subscribed by a physician, or the wrong products
`
`provided by pharmacist or taken by a patient. $33 Schering Corporation v. Alza Corporation,
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`207 U.S.P.Q. 504 (T.T.A.B. 1980) (great care exercised to prevent any possibility of confusion
`
`in use of pharmaceutical trademarks); Alfacell Corp. v. Anticancer Inc., 71 U.S.P.Q.2d 1301
`
`(T.T.A.B. 2004) (avoiding confusion extremely important when dealing with marks used in
`
`connection with medicines); Glenwood Laboratories fizc. v. American Home Proclmjs Corp,
`
`BOS2 786796.!
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`-3-
`
`

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`173 U.S.P.Q. 19 (C.C.P.A. 1972) (view that higher standard be applied to medicinal products is
`
`supported by case law); Blansett Pharmacal Co.
`
`Inc.
`
`v. Carmrick Laboratories Inc., 25
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`U.S.P.Q.2d 1473 (T.T.A.B. 1992) (avoiding confusion even more important when marks used on
`
`pharmaceuticals). Because the marks ALDARA and ALNARA are so similar, it is highly
`
`possible that pharmacists could misread a prescription or doctors could rnishear patients
`
`describing the medications that they are using, either of which scenarios, might present a
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`physically harmful or even a life or death situation. When the risk to the public is taken into
`
`account, it is clear that the potential dangers inherent in confusion by doctors, pharmacists or
`
`patients dictates that the marks ALDARA and ALNARA are confusingly similar.
`
`1.
`
`Opposer Has Clear Priority of Use
`
`Opposer (through its predecessors-in-interest) first used its ALDARA Mark at least as
`
`early as October‘ 1996. §e_e Bellamy Dec. at 1] 3, and Exhibit “B” attached hereto. Applicant first
`
`began using its ALNARA Mark in connection with the Applicant’s Goods in April 2009 in
`
`clinical trials. §_e§ Appiicant’s Response to Interrogatory No. 7 attached hereto as Exhibit “D”.
`
`Applicant flied its Application on January 21, 2009 (E Exhibit “B” attached hereto),
`
`more than twelve years after Opposer began use of the ALDARA Mark. Accordingly, Opposer’s
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`priority of use is indisputable.
`
`2.
`
`The Marks Are Confusingly Similar
`
`There is no genuine issue with regard to the similarity of the marks, based on a
`
`comparison of the marks in terms of similarities as to appearance, source, connotation and
`
`commercial impression. T.M.E.P. § 1207.01(b).
`
`In comparing the marks, one must take into account fallible memories of consumers who
`
`retain general impressions of marks, and who are not presumed to have the marks available for
`
`13082 786796.!
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`

`
`side by side comparison. E Spoons Restaurants, Inc. v. Norrison, Inc, 23 U.S.P.Q.2d I375
`
`(T.T.A.B. 1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992). Opposer’s Mark consists of the
`
`term ALDARA and App1icant’s Mark consists of virtually the same word, the only difference
`
`being one letter »~ the D in ALDARA is an N in the mark ALNARA. The marks are therefore
`
`Very similar in appearance.
`
`The word ALDARA is pronounced AL—DAR~A. See Bellamy Dec. at 1[ 4. Similarly,
`
`Applicant’s ALNARA Mark is pronounced AL-NAR-A. This pronunciation is clear from the
`
`way in which Applicant explained how it came up with its ALNARA Mark, namely that its mark
`
`is a combination of two of Applicant’s founders’ names, specifically, Alyexy Margolin and
`
`NARA Margolin. E Applicant’s Response to lnterrogatory No. 4 attached as Exhibit “D”.
`
`The difference in the pronunciation of the marks is subtle at best. The “D” sound in
`
`ALDARA is created by the speaker’s tongue being pressed up against his palate and air being
`
`breathed out. Similarly, the “N” sound in ALNARA is created by the speaker’s tongue being
`
`pressed up against his palate, but without the same breath out. Because the means by which the
`
`speaker creates the sounds “D” in ALDARA and “N” in ALNARA are similar, there is a high
`
`likelihood that the two letters may be interchanged and misspoken, and subsequently confused
`
`by any party hearing them. The marks are therefore are similar in sound as well.
`
`The word ALDARA is a relatively uncommon female name that is a variant of the
`
`German name ALDA or the Greek name ALDORA, and means “old” or “prosperous” or
`
`“winged gift.” E attached Exhibit “F”. The name ALDARA does not appear in the list of the
`
`top 1000 baby names in the United States in the years 2000~2008 inclusive. 5. Other than
`
`association with Opposer’s goods, the term ALDARA does not have any meaning in the area of
`
`pharmaceutical products. See Bellamy Dec. at 1[ 5. The term ALDARA is therefore fanciful or
`
`BOS2 786796.!
`
`_
`
`-
`
`

`
`arbitrary as used in relation to Opposer’s goods and is entitled to a broad scope of protection.
`
`Sic Deltomz Transformer Corp. v. Wal—Mart Stores, Inc., 115 F. Supp. 2d 1361, 1366 (MD. Fla.
`
`2000). As was stated above, the ALNARA Mark was created by combining two names of
`
`founders of the Applicant and the ALNARA Mark therefore does not have any common meaning
`
`to the public that would be used by the public to distinguish it from the ALDARA Mark.
`
`Because there is nothing about the ALNARA Mark that distinguishes it in the eyes or cars or
`
`minds of the public from the ALDARA mark, the connotations and commercial impressions of
`
`the two marks are similar.
`
`3.
`
`The Goods of Opposer And Applicant Are Sufficiently Related to Support a
`Finding of Likelihood of Confusion
`
`Opposer’s registration for the ALDARA Mark covers, “pharmaceutical preparations,
`
`namely immunomodulators,” in Class 5.
`
`lmmunomodulators are any substance that helps to
`
`regulate the immune system. E Exhibit “G”. Immunomodulators are used to treat respiratory,
`
`oncologic, digestive and other diseases and disorders. E Exhibits “G” and “H”. Applicant
`
`seeks registration of the ALNARA Mark in connection with “pharmaceutical preparations for the
`
`treatment of metabolic, endocrine, gastrointestinal, digestive,
`
`rheumatologic, urological,
`
`nephrology,
`
`inflammatory, pediatric, nutritional,
`
`immunologic, cardiovascuiar, dermatologic,
`
`hematologic, infectious, circulatory, puimonary, oncologic, muscular and respiratory diseases
`
`and disorders” in Class 5. Although the goods are not identical, that is not dispositive of the issue
`
`of likelihood of confusion.
`
`The inquiry is whether the goods tor sen/ices| are related, not identical. The issue is not
`whether the goods [or services] will be confused with each other, but rather whether the
`public will be confused about their source. It is sufficient that the goods or services of the
`applicant and the registrant are so related that
`the circumstances surrounding their
`marketing are such that they are likely to be encountered by the same persons under
`circumstances that would give rise to the mistaken belief that they originate from the
`same source. T.M.E.P. § 1207 .0l(a)(i) (emphasis added; citations omitted).
`
`nos: 786796.}
`
`- 11 _
`
`

`
`Third~party registrations have probative value to the extent that they may serve to suggest
`
`that goods or services are of a type that may emanate from a single source. T.M.E.P. §
`
`1207.01(d)(iii). See also In Re Infinity Broadcasting Corp., 60 U.S.P.Q.2d 1214, 1217-18
`
`(T.T.A.B. 2001).
`
`In this case,
`
`there are numerous third-party registrations for marks in
`
`connection with both immuncmodulators and with pharmaceutical preparations for the treatment
`
`of various disorders including, metabolic, endocrine, gastrointestinal, digestive, rheumatologic,
`
`urological, nephrology,
`
`inflammatory, pediatric, nutritional,
`
`immunologic, cardiovascular,
`
`dermatologic, hematologic,
`
`infectious, circulatory, pulmonary, oncolcgic, muscular and
`
`respiratory diseases. E Registrations and Approved Applications set forth in Exhibit “I”. The
`
`combination of pharmaceutical products in these registrations and allowed applications indicates
`
`that consumers routinely see and are likely to beiieve such goods originate from the same source
`
`and the goods are therefore related to one another.
`
`4.
`
`The Channels of Trade And Consumers for 0Qposer’s and Agplicanfls
`Goods Are Identical
`
`Neither Opposer’s registration for the ALDARA Mark nor Applicant’s application for the
`
`ALNARA Mark contains any restrictions on channels of distribution. See the goods descriptions
`
`for the ALDARA Mark and the ALDARA Mark at Exhibits “B” and “C”, respectively. Thus,
`
`the trade channels for the goods identified by the marks at issue must be deemed to be those
`
`normal for the trade. E Kongo! Ltd. v. Kanga ROOS U.S.A., 974 F.2d 161, 23 U.S.P.Q.2d 1945
`
`(Fed. Cir. 1992). Opposer’s goods are available to the ultimate consumers by prescription. See
`
`Opposer’s response to Interrogatory No. 3 in attached Exhibit “J”. Applicant’s goods will also
`
`reach consumers when prescribed by physicians. See Applicant’s response to Request for
`
`Admission No. 12 attached hereto as Exhibit “E”.
`
`In this case, the goods of Opposer and
`
`sosz 786796.1
`
`_ 12 -
`
`

`
`Applicant share the same channels of trade, further supporting a finding of a likelihood of
`
`confusion.
`
`IV.
`
`CONCLUSION.
`
`The similarities of the marks, the relatedness of the goods, and the common channels of
`
`trade compel a finding under Section 2(d) of a likelihood of confusion. Further, because public
`
`policy, calls for a lesser burden of proof of likelihood of confusion where the products at issue
`
`are drugs, the opposition must be sustained.
`
`For the foregoing reasons, Opposer requests that its Motion be granted and that summary
`
`judgment be entered, sustaining this opposition against Alnara Pharmaceutical’s Application,
`
`Serial No. 77/653,491 for the mark “ALNARA”.
`
`
`
`BOS2 7867961
`
`_ 13 _
`
`

`
`CERTLFICATE OF SERVICE
`
`I hereby certify that the foregoing OPPOSER’S MOTION FOR SUMMARY JUDGMENT AND
`MEMORANDUM IN SUPPORT OF OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`was served by overnight mail and by e-mail upon Applicant to the attention of Michael J.
`Bevilacqua, Esq., Wilmer Cutler Pickering Hale and Door LLP, 60 State Street, Boston,
`Massachusetts 92109 on this 9”‘ day of April 2010.
`
`57
`
`/
`
`BOS2 786796.l
`
`

`
`EXHIBIT “A”
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF APPLICATION SERIAL NO. 77/653,491
`MARK: ALNARA
`
`
`GRACEWAY PHARMACEUTICALS, LLC,
`OPPOSBR
`
`APPLICANT ‘-J
`
`V.
`
`OPPOSITION N0. 91190284
`
`ALNARA PHARMACEUTICALS, INC.,
`
`DECLARATION OF JOHN A. A. BELLAMY
`
`I, John A. A. Bellamy, declare that the following facts are true and made by me from my
`
`personal knowledge of the matter stated, except where I expressly state that it is my opinion, and
`
`as to such opinions, I declare that they truly represent my present opinion based on my
`
`experience of the facts.
`
`1.
`
`I am the Executive Vice President & General Counsel of Graceway
`
`Pharmaceuticals, LLC “Graceway” or “Oppopser” ), and have held this position since February
`
`of 2006.
`
`2.
`
`In December 2006, Graceway purchased the business and goodwill associated
`
`with the trademark ALDARA from 3M Company pursuant to an asset purchase agreement. An
`
`assignment from 3M to Graceway of the mark ALDARA ,U.S. Trademark Registration No.
`
`2053136, was recorded with the United States Patent and ‘fradernark Office on January 25, 2007.
`
`3.
`
`Prior to Graceway purchasing the business and goodwill associated with the
`
`ALDARA mark, 3M and its predecessor in interest, Riker Laboratories, Inc. offered
`
`B052 786933.!
`
`

`
`pharmaceutical products under the ALDARA mark in the United States since at least as early as
`
`October 30, 1996.
`
`4.
`
`5.
`
`The trademark ALDARA is pronounced AL-DAR—A.
`
`I am not aware of any meaning ofthe term ALDARA to the pharmaceutical
`
`industry other than as a brand name for Graceway’s product.
`
`
`
`B082 'i86933.E
`
`

`
`EXHIBIT “B”
`
`

`
`Latest Status Info
`
`Page 1 of 3
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2010-04-09 13:43:51 ET
`
`Serial Number: 74573320 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number: 2053136
`
`Mark (words only): ALDARA
`
`Standard Character claim: No
`
`Current Status: This registration has been renewed.
`
`Date of Status: 2007-05-18
`
`Filing Date: 1994-09-14
`
`’I‘ransformed into a National Application: No
`
`Registration Date: 1997-04-15
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 105
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact
`the Trademark Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 830 -Post Registration
`
`Date In Location: 2007-05-18
`
`LAST APPLICANT(S)/OWNER(S) or RECORD
`
`1. GRACEWAY PHARMACEUTICALS, LLC
`
`Address:
`
`GRACEWAY PHARMACEUTICALS, LLC
`340 EDGEMONT AVENUE SUITE 500
`
`BRISTOL, TN 37620
`United States
`
`Legal Entity Type: Limited Liability Company
`State or Country Where Organized: Deiaware
`
`GOODS AND/OR SERVICES
`
`International Class: 005
`
`Class Status: Active
`
`http://tarinuspto.gov/serviet/‘tarr?regser=seria1&entry=74573320
`
`4/9/2010
`
`

`
`Latest Status Info
`
`Page 2 of 3
`
`pharmaceutical preparations, namely irnrnunoinodulators
`Basis: 1(a)
`First Use Date: 1996-10-30
`First Use in Commerce Date: 1996-10-30
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`(NOT AVAELABLB)
`
`(NOT AVAILABLE)
`
`PROSECUTION HISTORY
`
`NOTE: To View any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this page.
`
`2007-05-18 - First renewal 10 year
`
`2007-05-18 - Section 8 (10-year) accepted! Section 9 granted
`2007-05-16 - Assignment Of Ownership Not Updated Automatically
`
`2007-05-15 - Assigned To Paralegal
`
`2007-04-ll - Combined Section 8 (10-year)/Section 9 filed
`
`2007-04-11 - TEAS Section 8 & 9 Received
`
`2007-03-28 - Assignment Of Ownership Not Updated Automaticaliy
`
`2007-03-21 - Assignment Of Ownership Not Updated Automatically
`
`2007-02-07 - Automatic Update Of Assignment Of Ownership
`
`2007-01-25 - TEAS Change Of Correspondence Received
`
`2006-12-14 - Case File In TICRS
`
`2003-07-09 - Section 8 (6—year) accepted & Section 15 acknowledged
`
`2003-04-14 - Section 8 (6-year) and Section 15 Filed
`
`2003-04-14 - TEAS Section 8 & 15 Received
`
`1997-04-15 - Registered - Principal Register
`
`1997-02-06 - Allowed for Registration - Principal Register (SOU accepted)
`
`http ://tarr.uspto.gov/servlet/tarr?regse1'=serial&entry=745 73 320
`
`4/9!20l0
`
`

`
`Latest Status Info
`
`Page 3 of3
`
`1997-02-06 - Assigned To Examiner
`
`1997-02-03 - Statement of use processing complete
`
`1996-12-05 - Amendment to Use filed
`
`1996-08-15 - Extension 1 granted
`
`1996-05-23 - Extension 1 filed
`
`1995-12-05 - Noa Mailed - SOU Required From Applicant
`
`1995-09-12 - Pubiished for opposition
`
`1995-08-11 - Notice of publication
`
`1995-06-24 - Assigned To Examiner
`
`1995-05-16 - Approved for Pub - Principal Register (Initial exam)
`
`1995-03-31 - Communication received from applicant
`
`1995-02-21 - Non-finai action mailed
`
`1995-02-16 - Assigned To Examiner
`
`1995-02-09 - Assigned To Examiner
`
`1995-02-07 - Assigned To Examiner
`
`ATTORNEY!CORRESPONDENT INFORMATION
`
`Attorney of Record
`Carrie Webb Olson
`
`Correspondent
`Carrie Webb Olson
`
`Edwards Angeli Palmer & Dodge LLP
`P.O. Box 130
`
`F.D.R. Station
`New York NY 10150
`
`Phone Number: 617-951-2286
`Fax Number: 888-325-1659
`
`http://ta1‘1‘.uspto.goviservlet/tarr?regser=se1'ial&entry-=74573320
`
`4/9/2010
`
`

`
`EXHIBIT “C”
`
`

`
`Latest Status Info
`
`Page 1 of 3
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2010-04-09 13:44:06 ET
`
`Serial Number: 77653491 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
`ALNARA
`
`(words only): ALNARA
`
`Standard Character claim: Yes
`
`Current Status: An opposition is now pending at the 'I‘1'aden1a1'l( Trial and Appeal Board.
`
`Date of Status: 2009-05-19
`
`Filing Date: 2009-01-21
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 107
`
`Attorney Assigned:
`TRUSILO KELLY JEAN
`
`Current Location: 650 —Publication And Issue Section
`
`Date In Location: 2009-04-01
`
`LAST APPLICANT(S)/0WNER(S) OF RECORD
`
`1. Alnara Pharmaceuticals, Inc.
`
`Address:
`
`Alnara Pharmaceuticals, Inc.
`840 Memorial Drive
`
`http://ta1'i'.uspto.gov/servlet/tarr?regser=serial&ent1y=7765349I
`
`4/9/2010
`
`

`
`Latest Status Info
`
`Page 2 of 3
`
`Cambridge, MA 02139
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: Delaware
`
`GOODS AND./OR SERVICES
`
`Internationai Class: 005
`Class Status: Active
`
`pharmaceutical preparations for the treatment of metabolic, endocrine, gastrointestinal, digestive,
`rheumatologic, urological, nephrology, inflammatory, pediatric, nutritional, immunologic,
`cardiovascular, derrnatologic, hematologic, infectious, circulatory, pulmonary, oncologic, muscular and
`respiratory diseases and disorders
`Basis: 1(1))
`First Use Date: (DATE NOT AVAILABLE)
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`(NOT AVAILABLE)
`
`(NOT AVAILABLE)
`
`PROSECUTION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this page.
`
`2009-05-19 - Opposition instituted for Proceeding
`
`2009-05-19 - Opposition papers filed
`
`2009-05-05 — Published for opposition
`
`2009-04-15 — Notice of publication
`
`2009-04-01 — Law Office Publication Review Completed
`
`2009-03-31 — Assigned To LIE
`
`2009-03-3 1 - Approved for Pub — Principai Register (Initial exam)
`
`2009-03-31 - Assigned To Examiner
`
`2009-01-26 - New Application Entered In Tram
`
`http://tanzuspto.gov/servlet/tarr?regseFserial&entry=7765 3491
`
`4/9/2010
`
`

`
`Latest Status Info
`
`Page 3 of 3
`
`ATTORNEY!CORRESPONDENT INFORMATION
`
`Attorney of Record
`Michael J. Bevilacqua
`
`Correspondent
`MICHAEL J. BEVILACQUA
`WILMER CUTLER PICKERING HALE, DORR LL
`60 STATE STREET
`
`BOSTON, MA 02109
`Phone Number: 617-526-6448
`Fax Number: 617-526-5000
`
`http ://tannuspto.gov/servlet/ta1'r?regse1=seria1&ent1'y=7765349 1
`
`4/9/2010
`
`

`
`EXHIBIT “D”
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Graceway Pliarmaceuticals, LLC
`
`Opposer
`
`v.
`
`Alnara Pharmaceuticals, Ine.,
`
`Applicant
`
`\.../\u_/“-./‘~—/\—/‘\—/\_/\-..¢’\-—/\-—/\u_/
`
`Opposition No. 91190284
`
`APPLICANT’S RESPONSE TO OPPOSER’S FIRST SET OF INTERROGATORIES
`
`PRELIMINARY STATEMENT
`
`1.
`
`These answers are made solely for the purpose of this proceeding and